Apple Inc v. RJ Technology LLC

1. Case Identification

• Case #: IPR2023-01350
• Patent #: 7,749,641
• Filed: August 23, 2023
• Petitioner(s): Apple Inc.
• Patent Owner(s): RJ Technology LLC
• Challenged Claims: 5-14

2. Patent Overview

• Title: Secondary Lithium Ion Cell or Battery, and Protecting Circuit, Electronic Device, and Charging Device of the Same
• Brief Description: The ’641 patent discloses secondary lithium-ion batteries that purportedly achieve improved efficacy through a combination of operating within a specific range of high charge cut-off voltages and using a specific ratio of positive to negative electrode materials.

3. Grounds for Unpatentability

Ground 1A: Obviousness over Yamaki and Sakamoto - Claims 5-8 and 11-14 are obvious over Yamaki in view of Sakamoto.

• Prior Art Relied Upon: Yamaki (Japanese Patent Publication # 2001-167763) and Sakamoto (Japanese Patent Publication # H09-293536).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Yamaki taught a high-performance lithium secondary battery with a high charge cut-off voltage (4.4V to 4.8V) that falls within the range of claim 5. Sakamoto taught that designing a battery with a specific excess of negative electrode capacity relative to positive electrode capacity (a ratio of 1.05 to 1.30) improves cycle performance and safety by preventing lithium deposition. Petitioner asserted that applying Sakamoto's electrode capacity ratio to Yamaki's high-voltage battery renders the claimed invention obvious, as Sakamoto’s disclosed ratios fall within the claimed ratio range of 1:1.0 to 1:2.5. The dependent claims related to specific voltage ranges (claims 6-7) and capacity retention (claims 11-14) were also allegedly met or rendered obvious by this combination.
  • Motivation to Combine: A POSITA would combine Yamaki and Sakamoto to improve the cycle characteristics of Yamaki’s battery, as both references share the objective of creating batteries with excellent cycle life. Further motivations included enhancing battery safety and resistance to overcharging, benefits explicitly taught by Sakamoto. Yamaki itself suggested that operating at high voltage allows for an increased amount of negative electrode material, directly pointing a POSITA toward a teaching like Sakamoto for specific, advantageous ratios.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because Yamaki and Sakamoto described compatible lithium-ion battery systems with similar materials. The known benefits of using excess negative electrode capacity and high charge-off voltages were well-established, making their combination a predictable optimization.

Ground 1B: Obviousness over Yamaki, Sakamoto, and Abraham - Claims 9-10 are obvious over Yamaki in view of Sakamoto and Abraham.

• Prior Art Relied Upon: Yamaki, Sakamoto, and Abraham (Patent 5,858,573).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1A by adding Abraham, which taught the use of "redox shuttle" additives in the electrolyte to provide chemical overcharge protection. Petitioner contended that a POSITA would add a redox shuttle as taught by Abraham to the Yamaki-Sakamoto battery. Claims 9-10 recite overcharging protection and release voltages, which Petitioner mapped to the oxidation potential of Abraham’s redox shuttle, arguing it would be selected to activate at a voltage slightly higher than the Yamaki-Sakamoto battery's charge cut-off voltage.
  • Motivation to Combine: A POSITA would add Abraham's redox shuttle to the base combination to prevent battery degradation and mitigate safety risks associated with overcharging. Abraham taught that its chemical protection method was broadly applicable and offered advantages over costlier electronic overcharge controllers.
  • Expectation of Success: Success was expected due to the general applicability of Abraham's teachings to lithium-ion batteries like the proposed Yamaki-Sakamoto combination and the compatibility of their respective material systems.

Ground 2A: Obviousness over Yasunami and Koyama - Claims 5-14 are obvious over Yasunami in view of Koyama.

• Prior Art Relied Upon: Yasunami (Japanese Patent Publication # H07-122298) and Koyama (Japanese Patent Publication # JP2000260472A).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner presented this as an alternative to Ground 1A. Yasunami taught a lithium battery with a high end-of-charge voltage (3.5V to 4.7V), which overlaps the claimed range. Koyama taught a specific capacity ratio between the negative and positive electrodes (1.3 to 2.5) to achieve better charging characteristics. Petitioner argued that combining Yasunami’s high-voltage battery with Koyama’s electrode ratio rendered the claims obvious, as Koyama’s ratios also fell within the claimed range.
  • Motivation to Combine: A POSITA would combine these references to improve charging performance, safety, and cycle life. Koyama explicitly linked its electrode ratios to improved charge density, a recognized goal in battery design. Yasunami provided general guidance that the electrode ratio could be adjusted, leading a POSITA to references like Koyama for specific implementations.
  • Expectation of Success: Success was expected because both references described compatible battery systems, and the principles of using high voltage and excess negative electrode capacity were well-known and understood to be combinable to achieve predictable performance improvements.

Ground 2B: Obviousness over Yasunami, Koyama, and Richardson - Claims 9-10 are obvious over Yasunami in view of Koyama and Richardson.

• Prior Art Relied Upon: Yasunami, Koyama, and Richardson (WO 01/29920).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground added Richardson to the Yasunami-Koyama combination. Analogous to Abraham, Richardson taught using redox shuttle additives with specific "Onset Potentials" for overcharge protection. Petitioner argued a POSITA would incorporate a Richardson shuttle into the Yasunami-Koyama battery to meet the overcharge protection limitations of claims 9-10.
  • Motivation to Combine: The motivations were identical to those in Ground 1B: to add robust, chemical-based overcharge protection to improve battery safety and longevity.
  • Expectation of Success: Richardson’s teachings were presented as broadly applicable to lithium batteries, ensuring a high expectation of success when combining them with the Yasunami-Koyama battery system.

4. Arguments Regarding Discretionary Denial

• Fintiv Factors (§314(a)): Petitioner argued against discretionary denial under Fintiv, stating that the petition was filed diligently, the parallel district court litigation was in its early stages with minimal investment, and Petitioner stipulated it would not pursue the same grounds in court if an IPR is instituted.
• Advanced Bionics/Becton Factors (§325(d)): Petitioner contended that denial under §325(d) was inappropriate because none of the asserted prior art references were before the examiner during the original prosecution. Furthermore, Petitioner argued the invalidity arguments were substantively distinct from those considered during prosecution. The prosecution focused on the patentability of introducing a high cut-off voltage to a conventional battery, whereas the instant petition starts with prior art batteries that already operate at high voltages and argues for the obviousness of modifying their electrode ratios.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 5-14 of the ’641 patent as unpatentable under 35 U.S.C. §103.